I worked for a large software company recently and quit to go work a much better place. I thought I had a clean break, but apparently the company is filing to patent work I did there.

The specific patent is basically simple configuration screens on top of a regular expression engine to detect spam. None of these screens is novel, and I was aware of similar implementations by competitors. We were playing catch up in the industry. These screens are just on-off switches and obvious to anyone who knows how to build software UIs.

Somehow my coworkers, looking to get the $1500 bounty and tally on their performance reviews, got these screens filed as a patent. And they put my name on it and asked me to sign (I wrote the specs for this feature and prototyped it). I said no to the patent lawyer, provided links to the existing examples (prior art) that the team was aware of, and the lawyer sent me a nice letter saying they would proceed and treat me as a "non-cooperating inventor." And they sent me a $250 check.

I don't want the money (if it were $10million, maybe, let's be honest). Moreover, I don't agree with most software patents I read about in the papers, I don't want this patent filed. What can I do? Can I tell someone at the patent office about the prior art and the willful disregard of it when filing?

(IANAL and all that jazz...) Did your employment contract specify that IP you developed there belonged to the company? Probably, in which case I don't think you'd be able to prevent the filing. Instead, wait 'til the application shows up on google patents and then collect prior art on this site.
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grossvogelSep 21 '12 at 15:20

What was the IP policy of the company you worked for? Do you remember any IP clauses from your employment contract? Probably that information will help in the quality of the answer. At the outset I should say that, if prior art exists which is significantly similar then the chances of the patent being granted are very slim.
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pkzSep 21 '12 at 15:25

8

Step one: don't cash the check. That would show tacit or implicit cooperation.
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Roddy of the Frozen PeasSep 21 '12 at 19:32

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Thank you for the questions and feedback. I don't have a copy of the employment agreement (I would have signed it 6 years ago and threw it out sometime in the last year since quitting). I have email to HR requesting a copy. Also, related to inventive step for this: it doesn't make sense that something can be patented if I, the human who made the decisions that invented it, don't think those decisions are novel or non-obvious. Am I not the skilled practitioner? There is something seriously messed up if I can't one way or another.
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user1005Sep 22 '12 at 15:25

6 Answers
6

This is a great question. First off, patent rights are initially owned by the inventor and are normally only assignable by a written agreement. In tech companies, developers are normally required to sign such a written agreement when they start their jobs. If that didn't happen, then you still co-own the patent rights. If you are a co-owner, one thing that you can do is simply announce to the world (perhaps here on this site) that you hereby give a free and open license to use this particular invention. In patent law, any owner has full rights to give away (or sell) licenses without any recourse to the other parties. You can also cause lots of trouble at the USPTO if you have rights.

Most likely you signed away your rights in the initial contract. However, it would be important to see the exact language of the contract. In particular, did you "promise to assign" your rights or did you "hereby assign all rights." The courts have interpreted these two phrases differently, and, with a "promise to assign" they still need to obtain a written assignment of rights from you (or a court order) in order to have legal title.

Now, most of the time the employment agreements also include a promise that the inventor will assist with the filing and prosecution of the patent. You will be contractually bound to this even after your employment and challenging the patent will be a violation of that promise. This may be why you use the term "torpedo" which suggests some amount of subterfuge.

Companies have always had a mechanism for filing patents even when the inventors refused. Elements of the America Invents Act (AIA) became effective on the 16th of September 2012 make this process even easier. Thus, the USPTO will not care whether you sign the documents or not. It is probably worth $1k to the company to get you to sign (rather than just $250) but that is far from $10m.

@Dennis_Crouch - When you come back: Isn't it possible that the employment agreement includes an automatic assignment of patent rights? What degree of cooperation is necessary in that case?
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user96Sep 23 '12 at 16:09

user96: If an NDA or similar agreement has an automatic assignment clause, then that document can be recorded as proof of assignment.
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g33kz0rSep 24 '12 at 19:30

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Regarding automatic assignment: (1) yes, most new employment agreements include automatic assignment language. The company lawyers hope that language will be interpreted to mean that the company automatically owns the invention as soon as it is invented. Supreme Court Justice Breyer noted his skepticism in that interpretation (how can you sell something that doesn't exist yet?). However, lower courts have accepted the language as effective. As USER96 correctly noted, a company this automatic assignment clause can be used to prove ownership when the inventor refuses to sign assignment docs.
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Dennis CrouchSep 25 '12 at 17:15

Even if you have the "promise to assign" language, that just means the company will sue you for contract breach and request specific performance from the courts as a penalty (amongst other things). You probably don't want the hassle of going through all that :-)
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paxdiabloDec 7 '12 at 6:52

First off, just because you think something is "obviously" covered by Prior Art doesn't mean that it really is. It takes years of experience to understand how to read a list of claims and it is possible that the independent claim(s) is written in such a way that it is not covered by the existing art in the field.

All that said, you do have a duty to disclose any and all material that you think constitutes Prior Art. It could well be that what you view as the Prior Art doesn't actually teach the methods or processes that are being disclosed. Or it could be that what you came up with isn't being used as the Independent Claim -- dependent claims needn't be "unique", they are simply additional variations on the Independent Claim. If you read most of my software patents they have a laundry list of dependent claims about how and where the "thing" that is doing the Independent Claim can reside or be accessed. My former employer pays for some huge number of applications to be filed annually and they all seem to include 20 claims, regardless of how pointless than last 4 or 5 are.

I applied for, and received, a patent on a Method and Process which makes use of bit masks in a manner which is virtually identical to another field of art which makes use of bit masks. If you read the claims (ignoring the specific area of application), and you were familiar with that other field of art, you'd likely recognize what was being done, think that it was probably seriously broken, then question how I received a patent. What was Novel wasn't the bit-shuffling, but the way in which that bit-shuffling was applied on a Non-Obvious way to a completely different field of art.

In short, there are a lot of ways that Prior Art isn't. If you dislike the software process system, that's one thing. But don't confuse a dislike of software patents for a bad software patent.

Yajoe, this is rich. You have all sorts of options and may already be well on the way, based on what you have provided here.

To start, you and your co- inventors and their patent attorneys are all bound by a Duty of Disclosure - basically saying all of you must disclose any information that is "material to patentability." As an inventor you are supposed to fulfill this duty by disclosing any such information to the lawyer responsible for the application. He is then responsible for disclosing it to the Patent Office. You have already done that, so he should disclose what you have already disclosed to him. Get onto the Public Pair system and see if they have disclosed it (you might need some help to do this the first time). If they have, the Examiner should be able to figure it out.

But if the lawyer didn't submit it, or you think the patent office will need more help, or really want to rub your employer's nose in it you can submit further information yourself. You can also explain why the prior art makes the invention obvious. You could even include a copy of your letter to the lawyer as evidence of their failure to comply with duty of disclosure. You could either get help from a patent attorney or agent to do this, or keep watching this website, I would think it will eventually have some easy how-to postings.

good luck getting an attorney to help you discredit another attorney. In general they stick together and the other attorney is likely going to provide more assistance to the attorney the op would want sanctioned. You might be able to find a paralegal to help you with the paperwork but it would mostly be a diy for the filings.
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ChadSep 21 '12 at 19:30

I tried using public pair, but all I have is the docket number. I can't find any other number of the document the lawyer sent me, and in the document there is no reference to the prior art I mentioned. I also had 2 business days to reply -- is this all normal?
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user1005Sep 25 '12 at 5:12

1

YaJoe - applications are only available on public PAIR once published. This is generally 18 months after the application was filed -- that may be why it doesn't come up.
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Dennis CrouchSep 25 '12 at 17:17

Hmm, $1500 bounty and performance reviews tied to patents. I suspect you were working for a big company which made you blue to the point where you had to leave.

If it is who I think it is then, yes, your employment contract will detail that all work carried out by yourself during your employment is owned by the company (as do all their contracts, I believe). Even if it's a different company, the fact that they submit patents at all probably means that their employment contracts come with similar clauses. IP is very important to many large companies.

In employment contracts I've seen, they've even tried to claim stuff that was unrelated to the work that people were doing for them, but people have gotten that stricken before accepting, since they may have been doing contract work or their own stuff in addition to what they was doing for the company.

So, bottom line, they almost certainly own the work you did before leaving, including that patent submission. Hence, no, you cannot stop this patent from being filed since you have no control over that.

What you can do (if you feel strongly about it) is to try and stop it from getting to the NOA (notice of allowance, meaning that the patent has been approved) stage within the USPTO.

First, I would cash the cheque. $250 is $250. It's not a reward for supporting the patent. It's really just the company trying to stop you from causing them trouble and, unless it's attached with an official agreement for you not to oppose, you can take the money and run.

Then I would notify (in writing) the lawyers of the prior art and why you think it invalidates the submission. They will then be legally required to bring that information to the USPTO as part of the submission. However, these lawyers are paid very well for arguing their way around such prior art so that may not kill it off.

There are other groups you can join such as Peer To Patent, which can be used to put forward prior art as well. I would wait until it hits the publication stage (available on PAIR) then submit the prior art to P2P and the USPTO. The latter may cost a little bit of money but you can probably use some of that $250 if you feel strongly enough about it - it would be karmic for the company to fund the fight against their own patent :-)

You'll need to wait for official publication since it's the claims of the submission that you need to discredit. Arguing about how non-novel this is is irrelevant until you see the claims.

Me, I would just cash the cheque and let it go, life's too short for crusades. If you're ever called on to testify in the patent lawsuit, just tell the truth. Getting the patent thrown out after the company has spent $50K+ on the whole process plus court costs will be far more damaging to them than stopping it from filing at all.

Standard disclaimers: I am not a lawyer, I am certainly not your lawyer, this diatribe above is not advice and it's worth every cent you paid me for it, which is a big fat zero :-)

I had thought about writing a letter to lawyer with the prior art, but I agree that the lawyer is just going to route around. I like the suggestion to wait for the publication (if I remember). I'm torn on cashing the check. One note, though, is that I'm not referring to big blue. Blue is a significant color for full-time employees, and I thought that's what you meant at first :)
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user1005Oct 15 '12 at 22:16

Not sure why you're torn on cashing the cheque. The patent is almost certainly going to be filed no matter what you do so you may as well get some benefit from it. If it's not BigBlue, then you should consult your actual agreement, but I suspect it will be similar. Any organisation actively seeking patents (and paying employees for them) will likely have the same protections in place as IBM.
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paxdiabloOct 16 '12 at 0:18

@yajoe "I like the suggestion to wait for the publication (if I remember)" - perhaps it has been published by now
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kristofApr 3 '13 at 10:38

@paxdiablo Actually I don't think there is anything at all odd wrt feeling bad about cashing it -- if one thinks it is fruit of a rotten tree, one should feel bad about eating it. This is basic ethics question. I am not saying everyone would have to feel bad (I could see many counterarguments); just that this seems like an ethical thing to do. Either accept it, cash; or not accept, don't cash.
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StaxManJul 22 '13 at 19:44

Yajoe, there are a few possibilities here, but it isn't very likely that you can actually stop the patent application from being filed - as Dennis Crouch noted, in most cases, your employee agreement will require you to sign papers, etc. -- you can (and should) ask for copies of all the filings of course!

Given your description, there are a couple of things that will happen now:

First, the patent attorney and anyone else involved with the patent application that you told about the prior art will be obligated to disclose that prior art to the USPTO. (This may not actually invalidate the patent, of course, but the art will have to be disclosed.) You may want to remind the attorney and your former colleagues of this obligation.

Second, unless they claim an invention that you did not participate in creating, you will have to be named as an inventor. I think it is unlikely that this will give you any actual ownership rights over the patent -- you probably signed those away as part of your employee agreement. But you may want to check in on this.

So one thing you should check on is whether the relevant prior art has been disclosed to the USPTO. If not, then I'd argue that you not only have the right to disclose what you know, but the affirmative obligation to do so. If the art has been disclosed to the USPTO, then the matter is basically out of your hands - unless your employee agreement is unusual and allows you to withdraw your assignment or something.

But the bottom line is that your best bet is to make sure that the USPTO examiner has the relevant prior art, and everything you knew of at the time of filing. At that point the ball is in the examiner's court.

Are you implying that if the lawyer does not disclose the prior art to the USPTO in the filing that he is doing something illegal or unethical? What are the consequences for this lawyer? Could he play the 'oh, I forgot' or the 'oh, I didn't know' card?
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JeachFeb 5 '13 at 23:21

If you made a patentable invention, as recognized by the law of the land, then your recognition is subservient to such law. You probably signed an IP assignment agreement with your former employer, so they likely have rights to file.

Your interest and insider knowledge, used to materially harm your former employer, may impact the judgement in a case/suit where your acts or information is used as evidence (perhaps against you)